Thou Shalt Not Steel

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Formed in Newcastle upon Tyne in 1962, the band ‘The Animals’ are best known for their hit singles “The House of the Rising Sun,” “We Gotta Get Out of this Place” and “Don’t Let Me Be Misunderstood.”

The original line up lasted a number of years before some members left and new ones joined. The band did not have any contracts in place to govern the relationships between its members, or to clarify what would happen in the event of a split.

In 2004, John Steel, the drummer in the original line up of the band, applied to register the words “The Animals” as a trade mark for use in relation to CDs, musical recordings and musical live performances.

Eric Burdon, the lead singer in the original line up, opposed Steel’s application, claiming that if Steel ever used the mark “The Animals”, Burdon would have the right to sue him for passing off. In 2008 the court held that Burdon could not oppose Steel’s application on these grounds as the goodwill accrued by the band up to 1966 had since dissipated. There was therefore said to be no goodwill remaining in the mark to give rise to a claim for passing off.

Burdon subsequently appealed the 2008 decision and recently succeeded in overturning that decision. The Appeal judge held that the fact that The Animals had stopped producing new material and performing together did not mean that there had been a dissipation of the band’s goodwill.

Steel’s use of the name The Animals was likely to give rise to confusion and the mistaken belief that the was the full successor in title to the business of the band. The fact that Steel was one of the “last men standing” did not entitle him to lay claim personally to the whole of the benefit of the band’s goodwill and reputation by registering the words as his own trade mark.

This decision highlights the importance of ensuring that adequate contractual agreements are in place to govern relationships between band members, and the ownership of intellectual property rights which accrue during the lifetime of a band. It is always easier to make decisions on the division of assets before any separation of members occurs.

If you would like advice about any IP related issues, please contact the IP and Media Team at Pannone.

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